One of the first posts on LIKELIHOOD OF CONFUSION® was about Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), and the question of whether “only a Gibson guitar can make a Gibson-looking guitar.” Not long after that decision came down, Gibson’s rival Fender filed for what it now evidently believed it had a shot at getting — a trademark registration for guitar shapes.

Fender had an uphill battle, though. Not only would it have to satisfy the post-TrafFix Devicesstandard for protection of a product configuration as a trademark, namely showing that the feature claimed as a trademark is not functional. In addition, because in the case of a musical instrument the product is the packaging, Fender would

10 Years of LIKELIHOOD OF CONFUSION®

have to prove “acquired distinctiveness” for its would-be trademark-protected products, such that “the primary significance of the product configuration in the minds of consumers is not the product but the source of that product.” (Remember that.)

Obviously, however, Fender was emboldened by the Gibson decision. Never mind that in September, 2005, the Sixth Circuit reversed the Middle District of Tennessee ruling in Gibson, in an opinion which rejected a unique theory of LIKELIHOOD OF CONFUSION. It was a variation of downstream or post-sale likelihood of confusion divided by “initial-interest confusion,” a combination the court termed “smoky-bar confusion”: Read More…

Nick Daly drops me a note to the effect that one Jay-Z, gazillionaire rhyming scatologist, has been sued by a professional perspirer and leaping stage goon called Diamond Dallas Page — ach! my kingdom for a stage name! — for the former’s “Roc-A-Fella Hand Gesture,” also known as the “Diamond Cutter” hand gesture. Evidently Mr. Z uses the former, Mr. Page the latter of these nicknames for the clever manipulation of the human carpal, metacarpal and phalange bones in a distinctive diamond-shaped pattern in association with the services provided by the respective performers.

10 Years of LIKELIHOOD OF CONFUSION®

Now, Roc-a-Fella is a record company specializing in rhythmic spoken-word obscenity-laced performance art which generates (1) some light, if you will, allowing one to peer into the dimmer recesses of the heart of urban America’s cultural darkness profundity, plus (2) much heat as regards the controversial word choice typically employed by its practitioners as well as the ribald subject matter of the works, in addition to (3) immense dump trucks full of cash.
You may perhaps, in a merry mood, “Rock a fellow” — “rock” him, in this sense meaning to entertain him or absorb his attentions by use of contemporary upbeat rock and roll music or its derivaties — or as we northeastern urbanites might say, you might rock “a fella”; hence the name of the company. And it is hard not to suspect an allusion, based both on ironic association considering the countercultural nature of the works as well as with vast hordes of currency, to the name Rockefeller, the billionaire dynasty that, as is well known, controls everything, and whose name is arguably a “trademark” for immense wealth and power. (UPDATE: Jay-Z, in contrast, evidently cannot quite as readily as the Old Man could rock every fella as he might like to.) Read More…

Forget about the IP rights in those MTA symbols — you can probably use them however you want, now. (Remember to read my disclaimer on the right, though!)

10 Years of LIKELIHOOD OF CONFUSION®

Almost two years ago I expressed my skepticism about the (New York) Metropolitan Transportation Authority’s aggressive IP enforcement program focusing on the iconic train symbols of the New York City subway system. [That post ended as follows]:

I also had a chance to reconsider the issue, and decided that — absent the establishment by Congress of some sort of “public trust trademark” amendment to the Lanham Act — these symbols are about as good a source indicator for a service as you can ask for. A D train goes on the D route on the D schedule. The E train, the F, the 1 the 2 and the 3 — completely arbitrary, yet packed with trademark goodwill. Very enforceable! That doesn’t mean there can’t be fair use, etc. — but prima facie, these would seem to be very good trademarks that designate very specific services boasting particular qualities.

The Strategic Name Development blog reports that the naming rights to the New York Mets’ new baseball stadium have been sold to Citigroup. The stadium will be called “CitiField” and the privilege of that garish plug will cost Citigroup $20 million a year, or the cost of a grade-A free agent. The blog post has a great rundown on alternative “Citi” names that were considered, as well as a roundup of back-page and other learned reactions.

MarketWatch reports this story about an opinonated gent who’s suing Wal-Mart for a declaratory judgment:

Smith said he was making a point by comparing the giant retail company to the Nazis by creating T-shirt designs that played off the Bentonville, Ark., firm’s familiar logo, including “I (heart) WAL*OCAUST. They have family values and their alcohol, tobacco and firearms are 20% off,” the newspaper reported.

Wal-Mart launched a legal battle by writing a cease-and-desist demand that led Smith to file suit Monday in federal court in Atlanta. Former presidential hopeful Ralph Nader’s legal aid group, Public Citizen, is helping Smith, the report said.

Smith should be ashamed of himself for comparing a damned variety store to the Third Reich. It demonstrates a real lack of moral judgment on his part.

But the stupid party here is Wal-Mart, which should get its clock cleaned and which has given a platform for publicity to a bitter, if morally blind, adversary. Whether it will in this trademark-owners-take-all environnment is, however, anyone’s guess.

UPDATE: The Pierce IP News Blog has it that Wal-Mart will claim its trademark is being besmirched by Smith. In other words, its claim will probably hinge on a trademark dilution count. You know, dilution — the infringement that never has to say “I’m confused.”

All signs pointed to a Hollywood ending with Disney and Mickey Mouse living happily ever after – at least until a grumpy former employee looked closely at fine print long forgotten in company archives. . . .

Copyright questions apply to an older incarnation, a rendition of Mickey still recognizable but slightly different. Original Mickey, the star of the first synchronized sound cartoon, “Steamboat Willie,” and other early classics, had longer arms, smaller ears and a more pointy nose. . .

The issue has been chewed over by law students as class projects and debated by professors. It produced one little-noticed law review article: A 23-page essay in a 2003 University of Virginia legal journal argued that “there are no grounds in copyright law for protecting” the Mickey of those early films.

Garsh, Mick!

Roger Schechter, a George Washington University expert on copyright, called the article’s argument “a plausible, solid, careful case.” By contrast, a Disney lawyer once threatened the author with legal action for “slander of title” under California law. No suit was filed.

TICKETS TO THE California Science Center’s latest exhibit, “Marvel Super Heroes Science Exhibition,” sell for $6.75 and up. But there’s one lesson the exhibition offers free of charge to anyone who wanders by the museum, and it’s not about science.

The lesson is in the giant sign looming over the center’s entrance archway: “Marvel ® Super Heroes(TM) Science Exhibition.” The “TM” stands for trademark, signifying that Marvel is claiming exclusive rights to use the term “super hero” as a marketing term for, well, superheroes. The company and its largest competitor, DC Comics, jointly obtained the trademark from the federal Patent and Trademark Office in 1981.

The government’s action means that any company wishing to market a comic book, graphic novel or related item with any variation of “super hero” in the name or title must get permission from Marvel and DC. Dan Taylor, the Costa Mesa-based creator of the “Super Hero Happy Hour” comic, learned about this absurdity two years ago when he was contacted by lawyers for Marvel and DC, prompting him to rename his series to the more pedestrian “Hero Happy Hour.”

What government action? What happened in 1981? (See below — someone else found the answer.) Nor does a claim of a valid registration make any sense in light of the claim in the editorial that the sign says:

Marvel ® Super Heroes(TM) Science Exhibition

If SUPER HEROES were a bona fide registered mark, it should say “Marvel ® Super Heroes ®,” not “Super Heroes(TM).” “TM” signifies the assertion of common-law trademark rights — not a registered mark and, as a practical matter, that a mark was either refused registration or that legal counsel advised against seeking registration (because the refusal would harm a future common law claim).The editorial argues that SUPER HEROES is a generic term not entitled to any trademark protection, which is correct. Genericness is the only way to defend against a registered and incontestible trademark, which presumably one registered in 1981 would be.

Even if it were true that two competing companies could own a trademark jointly in an area where they compete — thereby violating the axiom that trademarks indicate a single sourceof a good or service with which they are used — they seem to be succesfully avoiding the issue of their absurd joint registration, even as their giant signs claim only a “TM” common-law mark.

I guess that’s some super-heroic PR / legal spin job by the comic book fiends, but why journalists aren’t “getting this” — or why I [couldn’t] for the life of me find the source that does indicate a registration — leaves me pretty confused at the very unlikelihood of it all.

SUPER HEROES (“PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM [(( ; CARDBOARD STAND-UP FIGURES; PLAYING CARDS; PAPER IRON-ON TRANSFER; ERASERS; PENCIL SHARPENERS; PENCILS; GLUE FOR OFFICE AND HOME USE, SUCH AS IS SOLD AS STATIONERY SUPPLY;] NOTEBOOKS AND STAMP ALBUMS )).

He adds:

If you look at the owner/assignment information it appears to show joint ownership between DC and Marvel. (I’m with you, though–I don’t know how the mark can be a valid indicator of source.)

And why the plural? Believe me, there’s a reason for everything, including the companies’ continued non-use of the ®. They simply don’t want to draw attention to preposterous joint ownership (again — by competitors!) of the registration of a generic term. Ah, but utilizing the joint assignment — when a joint application would never have passed muster — is diabolically clever. It’s still not an enforceable trademark, however — registration, assignment or not.

Chip giant Intel has a bit of a reputation for being a trademark bully at times, threatening or suing many companies just for having “intel” in their name somewhere — including a travel agency and a jeans company. Now, before anyone brings it up, yes, as a trademark holder the law requires you to enforce your trademark against infringement, lest it become considered “generic” (such as xerox machines, kleenex tissues, aspirin and other brand names that became generic). But, the key in all of those generic situations was that the use was applied to things that directly competed with the original brand’s products. People referred to other tissues as “kleenex” and it stuck. Intel’s lawyers seem to go out of their way to find potential infringement where there obviously is none at all.

Paul Alan Levy alerts us to the latest such case, where Intel has sued the operators of the Mexico Watch newsletter, because its domain is LatinIntel.com. Of course, the reason for that is that it is using the commonly accepted abbreviation of “intel” as short for “intelligence.” It’s common shorthand, especially within government circles, to refer to gathered intelligence as simply “intel.” . . .

More importantly, no one is going to look at LatinIntel.com and confuse it for the world’s largest computer chip maker. No one is going to look at that site and wonder how come they can’t order a Centrino processor. There’s simply no confusion at all. . . .

Well, when I first read that post, I thought Mike may just be on to something there. Here’s how I see it now:

I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is. Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC

“Where you stand depends on where you sit” – Nelson Mandela

This is one of my favorite quotes. Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”

What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.

Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.

Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. Read More…

Trademark law does not trump the right to make and sell artistic depictions of real life after all, it turns out. Or even NCAA football.

Almost exactly four years ago I wrote about the suit by the University of Alabama urging the obnoxious claim that artistic depictions of its players at play were, by virtue of utilization of the familiar uniforms and colors of those players, infringements of the Alabama trademarks in its corporate sports machine. Amazingly, the first judicial ruling in that case has just come out — and, blessedly, it gets it right (even if the Tuscaloosa News reporting of it is a little, er, sic):

U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.

‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.

UA attorneys had argued before Propst in a hearing two weeks ago that Moore’s paintings showed trade dress, which they said is any symbol associated with UA, including the crimson and white color scheme.UA sued Moore for trademark violations in March 2005, alleging that he painted scenes of Crimson Tide football games without permission from the university and reissued previously licensed prints without paying royalties. The university is seeking back pay [sic] for more than 20 paintings and wants Moore to license any future paintings. . . .

Propst knocks down nearly every claim made by UA attorneys against Moore, even writing that Moore did not violate previous licensing agreements with new or reissued paintings. At the center of the issue, Propst dismisses UA’s assertion that painting Crimson Tide football violates [sic] trademark because the uniforms and their colors are not protected.

Also, UA argued that Moore’s paintings were too realistic and did not transform the original scene enough to constitute artistic expression. However, Propst writes the reality of the painting is needed to relate the play and adds to the level of artistry.

Propst also writes there isn’t enough confusion among customers as to who sponsors the paintings. ‘It is likely that people who buy the Moore paintings do so, at least partially, because of their loyalty to the University of Alabama and its football team,’ he wrote. ‘That, however, does not create any reasonable inference that they do so because of confusion based on the color of the uniforms.’

There will be no end to the greed or the attempt to utterly distort the entire purpose of trademark here — this will be appealed, it has been promised. In the Eleventh Circuit (as everywhere else), “To show a likelihood of success on the merits for [either a] trademark and trade dress infringement, [a plaintiff] must show that consumers will likely confuse the [plaintiff’s] mark or dress with [the junior user’s product or service]. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339,1343 (2000) (trade dress).” So what’s the argument — the public will think that the paintings are the Crimson Tide’s latest run defense?

Of course, consumer confusion is never, ever seriously considered in naked rent-seeking cases such as these — Read More…

Every lawyer who practices in the intellectual property area is asked frequently how to go about protecting a unique or creative idea that someone fears is at risk of being stolen by a prospective investor, partner or advisor to whom early disclosure is necessary. During the dot-com bubble, everyone walked around, it seemed, with an NDA (non-disclosure agreement) ready to be beamed from his Palm. Is an NDA still the answer? This post is actually about trademark registrations — but let me briefly reiterate my views about NDA’s, and, as we say, “connect up” the two seemingly unrelated topics.

I usually have a couple of points to make in response to the NDA question:

Most people to whom you are considering making disclosure are in the driver’s seat, and will not sign a non-disclosure agreement because doing so almost invites a claim if they end up getting involved in someone else’s similar project years later. Or they won’t sign just because you need them more than they need you.

Your idea isn’t really all that hot. Successful new businesses owe far more to (a) entrepreneurs’ focus and dedication, (b) adequate capitalization, (c) great timing and (d) the grace of God (not in that order), than to having come up with truly original concepts.

Security or death

These and similar arguments are well developed in an article from a few years ago called “The Cult of the NDA,” written (I think) by a fellow named Peter Leppik, which article lawyer readers of this blog should bookmark.

Comes now an entertainment lawyer named Barry Neil Shrum who has written a pretty thoughtful piece on some approaches that actually might work. It’s worth taking a look at. But I must note disagreement with his advice about trademarks, which unfortunately will reinforce, unintentionally, a number of common misconceptions about trademarks that are “out there.” And that means it’s time again to try to set things straight.

Early on Barry presents a fair summary of what you need to get trademark protection, though more on his allusion to securing trademarks for “titles” below. He helpfully makes it clear that federal trademark registration is “tedious, complicated and costly,” but doesn’t explain why, or explicitly address the concept of the Intent to Use application, which seems central to his ultimate advice.

And that leads to my beef — the following recommendation that Barry puts first on his list of otherwise very good, otherwise endorsed-by-LIKELIHOOD OF CONFUSION® suggestions:

(1) First, trademark all slogans, titles or name, at the very least your state level, but preferably at the federal level;

Unfortunately, this suggestion is densely packed with problems because Barry has not elucidated some fundamental facts about trademarks. Read More…

The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. This blog is about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.

It's easy it is to game almost any ranking system, not that I've tried to. As such. These are just what they are.

DISCLAIMER

THIS BLOG IS ONLY A BLOG, NOT LEGAL ADVICE. IT IS IN PART AN ADVERTISEMENT FOR LEGAL SERVICES BY ME, RONALD D. COLEMAN, BUT I AM NOT YOUR LAWYER. YOU ARE NOT MY CLIENT. JUST WALK BESIDE ME AND BE MY FRIEND.

*The term maven is used to mean "wise guy" here and is not meant to suggest that I am certified or otherwise authorized under bar rules to claim "expertise" in any field of legal practice. But try me.